Category: Trademarks

Plaintiff sued a competitor under the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) (“ACPA”)) and brought other trademark-related claims concerning the competitor’s alleged online scam of selling infringing nutritional supplement products. Plaintiff also sued the domain name privacy protection service Namecheap, which the competitor had used to register the domain name. As part of the order granting plaintiff’s motion for preliminary injunction, the court ordered Namecheap to transfer the domain name to plaintiff.

The court noted that a preliminary injunction “is an extraordinary remedy never awarded as of right,” and that the “traditional purpose of a preliminary injunction is to protect the status quo and to prevent irreparable harm during the pendency of the lawsuit.” Given these parameters, one may be reasonably surprised that the court went so far as to transfer the domain name before the case could be taken all the way through trial. Usually the transfer of the domain name is part of the final remedy awarded in a cybersquatting case, whether under the ACPA or the Uniform Domain Name Dispute Resolution Policy.

The opinion did not address the issue of whether the domain name transfer prior to trial might go further than to “protect the status quo”. It would seem the court could have just as easily protected the status quo by ordering the domain name not be used. The court apparently found the evidence to be drastically in favor of plaintiff. And since the defendant-competitor did not show up for the hearing, plaintiff’s evidence went unrebutted.

About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

The recent case of XPO CNW, Inc. v. R+L Carriers, Inc. coming out of a federal court in Michigan tells the interesting story of one company opportunistically using its competitor’s trademark in a domain name to set up an employee recruiting website. The decision sketches out certain circumstances when this practice passes legal muster.

The parties to the dispute are major trucking lines. If you have driven on any highways in the United States, you have no doubt seen 18-wheelers bearing the trademarks of the parties involved in this case. In late 2015, plaintiff XPO acquired Con-Way Freight. Shortly thereafter, defendant R+L launched a website targeting Con-Way’s employees using the domain name conwaylayoff.com. The website included the following statement:

Were you laid off from Con-way? Don’t worry about the XPO Logistics acquisition, when one door closes another opens. R+L Carriers is hiring today….Turn your valuable years of knowledge and experience into a new career with R+L Carriers, which was named a Top National/Multiregional LRL Carrier in Logistics Management magazine’s 2015 Quest for Quality Awards. R+L Carriers launched Conwaylayoff.com to inform those employees that may have been affected by the recent acquisition of Con-way Freight, of similar opportunities that we have where they may be able to put their skills to work.

Plaintiff sued for trademark infringement and for cybersquatting under the Anti-Cybersquatting Consumer Protection Act (“ACPA”). Defendant moved for judgment on the pleadings. The court granted the motion.

The court found there to be no sufficient allegations of trademark infringement because the documents before the court showed there was no likelihood of confusion as to the origin of defendant’s services. The language on the website (quoted above) contradicted plaintiff’s assertions of likely confusion.

On the ACPA claim, the court found there was no evidence that defendant used the domain name with a bad faith intent to profit.

The court compared this situation with the one in the case of Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004). In Lucas Nursery, there was no evidence that defendant intended to divert consumers from the plaintiff’s online location. Nor was there evidence that defendant ever sought to mislead consumers with regard to the site’s sponsorship. The site explicitly stated that it was established for the purposes of relaying defendant’s experience with the plaintiff’s nursery. Moreover, there was no offer to sell the site to plaintiff, and no other indicators of bad faith existed, such as providing misleading contact information or acquiring batches of additional domain names.

In this case, it was undisputed that defendant set up a web site and used plaintiff’s trademark in the domain name. But this was insufficient to establish that defendant operated in bad faith. Plaintiff did not allege that defendant ever offered to sell the domain name to plaintiff. Nor did it allege that defendant acquired other suspect domain names. Instead, plaintiff offered the court a barebones recital of the statutory language, stating that defendant registered and has used the domain name without plaintiff’s authorization and with bad faith, to profit from plaintiff’s trademark, and that the infringing domain name directed or redirected to a website controlled by defendant, who profited from its use. The court found this to be insufficient to survive the relevant pleading standard. Accordingly the court granted the motion for partial judgment on the pleadings concerning this claim.

About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

#1 – Trademark law protects your brand.

Trademarks are intellectual property. The different categories of intellectual property can be confusing, and as you are identifying and evaluating the different legal issues your business faces, you should seek to understand the role that each category plays. That way you can determine where you should focus your resources to cover the company’s greatest needs. Every business has trademark needs. Trademark law gives exclusive rights to providers of goods and services to use the company’s distinctive marks in connection with the company’s goods and services. A trademark (or a service mark, collectively “marks”) identify the source of goods and services. So while the company is the one that may claim rights in the trademark, it is useful to remember that the ultimate reason for trademark protection is to keep members of the consuming public from being confused about where the goods or services come from.

#2 – Registration is not necessary, but it is a good idea.

At least in the U.S., trademark rights arise from using the mark in commerce. This means a couple of different things. For one, the law will provide your company with exclusive rights to use a certain mark in connection with certain goods or services by virtue of your having used the mark in commerce in connection with those goods or services. But there are limits to this protection — you can only claim that exclusivity in the geographic area in which you’ve actually used the mark. Getting a registration with the United States Patent and Trademark Office helps you in this area. Once the USPTO awards your company a registration certificate for the mark, you are the presumed owner of the exclusive rights to that mark in connection with those goods and services anywhere in the United States, regardless of where you have actually done business. A registration carries with it other benefits as well — you can use the “circle R” designation with the mark, and your registration serves to help give notice to (i.e., warn) other companies who might consider adopting the same or similar mark.

#3 – Descriptive words and phrases generally cannot be trademarks.

Trademark law does not allow a company to claim exclusive rights on words or phrases that merely describe the product or some characteristic of it. This is a common issue that companies face when deciding on a mark for adoption and registration. Descriptive terms are good in that they convey to the consuming public what the product is all about. But descriptive terms are to be avoided in that they are not distinctive. Unless a mark is distinctive, the trademark laws do not recognize it as a trademark or service mark. A mark can be “inherently distinctive” in a number of ways. It may be a made up word (e.g., Kodak), “arbitrary” in that the original meaning of the word does not correspond with the products (e.g., Apple for computers), or “suggestive” – sort of describing the product but requiring a step in imagination (e.g., Beautyrest for mattresses). Or the mark can be a design. Marks can become distinctive over time (usually after 5 years of use). This is known as “acquired distinctiveness.”

#4 – Smart business owners do trademark clearance.

Trademark clearance is the process that a company goes through before actually using or seeking to register a mark. The goal is to become reasonably sure that the use of the proposed mark will not put you at high risk of infringing someone else’s mark. Clearance also helps prevent wasting resources on a trademark application that will get rejected by the USPTO because there is already a similar mark that someone else has applied for or registered. Clearance usually has a couple steps. Many companies have their trademark counsel perform “knockout searches” to identify any obvious risks of conflict. This can be as simple as doing a web search and a search of the USPTO database for marks that look and sound the same and are for similar goods or services. Before going all out on adopting and seeking to register a mark, however, it is a good idea to have trademark counsel perform a comprehensive search and advise on the results. A number of parties offer comprehensive search services. The key question in trademark clearance is likelihood of confusion. A mark owner needs to be reasonably sure that using the proposed mark in commerce will not cause confusion among the confusing public as to the source of the goods or services offered under the mark.

#5 – Trademark fair use is a thing.

In some circumstances a company can use another company’s trademark without much risk of infringement. Generally this falls under the heading of “fair use.” Classic fair use is when one company uses another’s mark in just a descriptive sense. For example, a laundromat may say in its advertising that it is next door to the Burger King. In that case, the use of Burger King is not an infringement. Nominative fair use is when a company uses another mark to describe some characteristic of that mark. A commercial for Toyota, for example, may use the Honda trademark for purposes of comparing the two product lines.

#6 – Use it or lose it. Protect it or lose it.

Trademark rights come from the company’s use of the mark, and there is always a risk that those rights might be abandoned. If a company stops using a mark, a court may find that it has abandoned its rights, and another company would be free to adopt and use the mark. The USPTO requires that documents be filed every few years to ensure that marks that are listed as registered remain in use. If a company does not take appropriate steps to ensure its mark is distinctive in the marketplace, it can similarly be found to have abandoned its rights. So mark owners should do some “policing” to see that there no one else uses a confusingly similar mark on similar products. If the company discovers such use, it must be diligent in seeking to get the other company to stop, through sending a cease and desist letter or through litigation when appropriate.

Federal appeals court holds that plaintiff failed to satisfy all elements of the Anticybersquatting Consumer Protection Act in action against competing airline

The federal Anticybersquatting Consumer Protection Act (ACPA) [15 U.S.C. 1125(d)] is a provision in U.S. law that gives trademark owners a cause of action against one who has wrongfully registered a domain name. In general, the ACPA gives rights to owners of trademarks that are either distinctive or famous at the time the defendant registered the offending domain name.

The Eleventh Circuit Court of Appeals recently affirmed the decision of a lower court that dismissed an ACPA claim, holding that the plaintiff failed to plead that its mark was distinctive at the time of the domain name registration.

Plaintiff sued its competitor, who registered the domain name tropicoceanairways.com. Defendant moved to dismiss, and the lower court granted the motion, finding that plaintiff failed to plead that its mark TROPIC OCEAN AIRWAYS was distinctive and thus protected under the ACPA. On appeal, the Eleventh Circuit affirmed the dismissal, holding that plaintiff’s complaint failed to allege that the mark was either suggestive or had acquired secondary meaning as an indicator of source for plaintiff’s services.

Suggestive marks are considered distinctive because they require “a leap of the imagination to get from the mark to the product.” (The court provided the example of a penguin used as a mark for refrigerators.) In this case, the court found the term “tropic ocean airways” was not suggestive, as it merely “inform[ed] consumers about the service [plaintiff provided]: flying planes across the ocean to tropical locations.”

The court rejected plaintiff’s argument that a pending application at the United States Patent and Trademark Office to register the mark proved that it was suggestive. While a certificate of registration may establish a rebuttable presumption that a mark is distinctive, the court held plaintiff was not entitled to such a presumption here, where the application remained pending. Moreover, the court observed in a footnote that the presumption of distinctiveness will generally only go back to the date the application was filed. In this case, the trademark application was not filed until about a year after the domain name was registered.

As for the argument the mark had acquired secondary meaning, the court found plaintiff’s allegations to be insufficient. The complaint instead made conclusory allegations about secondary meaning that were insufficient to survive a motion to dismiss. The court held that plaintiff failed to allege the nature and extent of its advertising and promotion, and, more importantly, did not allege any facts about the extent to which the public identified the mark with plaintiff’s services.

Trademarks are symbols that convey meaning, and ostensibly that meaning is ontologically linked to the purveyor of the goods or services with which the trademark is connected. But those symbols can relate to different ontologies as well, be they freighted with racism/prejudice, religious offense, or plain old poor taste. Take for example the ongoing Redskins dispute, Muslims protesting a sacred symbol on perfume, and the weird attempt by a Malaysian company to get an Australian trademark for MH17.

The law and social advocacy step in to critique these brand owners’ selection of marks. For example, the USPTO found the Redskins marks to so disparage Native Americans that the football team should not enjoy the protections of a federal trademark registration. Ticked-off Sufis protested their holy symbol being used in a concupiscent manner. And we all sort of scratch our heads at why a company would think it should capitalize commercially on the tragedy of an airliner downed in a war zone.

But do the law and social advocacy really have any role to play here? Of course. So perhaps the more critical question is whether those roles should be primary ones. Trademarks exist to regulate commerce. More specifically, trademark law seeks primarily to ensure that a purchaser’s decision making process will be unmessed-with by others seeking to muddy that purchaser’s picture of who is providing the goods or services. If trademarks can have multiple meanings, which of course they sometimes will, shouldn’t we just let the marketplace sort that out? At the same time that trademark law is guiding a purchaser’s decision in an environment hopefully free of confusion, why not just let the sensibilities of the purchasing majority decide what products – some branded with offensive symbols while others not – be sustained?

Evan Brown is an attorney in Chicago advising clients on matters dealing with trademarks, copyright, technology, the internet and new media.

The maker of KIND bars sued the maker of Clif bars alleging that the packaging of the Clif MOJO bar infringes the trade dress used for KIND bars. Plaintiff moved for a preliminary injunction, but the court denied the motion. But in its analysis, the court considered the relevance of a Twitter user’s impression of the products. Plaintiff submitted a tweet as evidence in which the user wrote, “I was about to pick up one of those [Clif MOJO bars] because I thought it was a Kind Bar at the vitamin shop ….” The court found that this type of initial interest confusion was actionable and therefore the tweet supported plaintiff’s argument.

While plaintiff was away from the office for a serious brain injury she suffered in a work-related auto accident, some of her co-workers accessed and posted, allegedly without authorization, from her Twitter and Facebook accounts. (There was some dispute as to whether those accounts were personal to plaintiff or whether they were intended to promote the company.) Plaintiff sued, alleging several theories, including violations of the Lanham Act and the Stored Communications Act. Defendants moved for summary judgment. The court dismissed the Lanham Act claim but did not dismiss the Stored Communications Act claim.

Plaintiff had asserted a Lanham Act “false endorsement” claim, which occurs when a person’s identity is connected with a product or service in such a way that consumers are likely to be misled about that person’s sponsorship or approval of the product or service. The court found that although plaintiff had a protectable interest in her “personal brand,” she had not properly put evidence before the court that she suffered the economic harm necessary for a Lanham Act violation. The record showed that plaintiff’s alleged damages related to her mental suffering, something not recoverable under the Lanham Act.

As for the Stored Communications Act claim, the court found that the question of whether defendants were authorized to access and post using plaintiff’s social media accounts should be left up to the jury (and not determined on summary judgment). Defendants had also argued that plaintiff’s Stored Communications Act claim should be thrown out because she had not shown any actual damages. But the court held plaintiff could be entitled to the $1,000 minimum statutory damages under the act even without a showing of actual harm.

Webceleb is a “social marketplace for independent music.” It sued several defendants over the use of the term “web celeb” in connection with a television show award category and a section of an entertainment website. Defendants moved for summary judgment and the trial court granted the motion. Plaintiff sought review with the Ninth Circuit. On appeal, the court affirmed the award of summary judgment.

The court held that defendants’ use of the term “web celeb” was a classic fair use because:

the use of the mark was not a trademark use;

the use was fair and in good faith; and

the use was only descriptive

There was no trademark use because the term “web celeb” (at least according to the court) is “common parlance” for internet celebrities, which was what the award category was intended to recognize. And the use of “web celeb” in connection with the electronic magazine was merely descriptive of the online magazine’s content. The use was in good faith, as the evidence showed defendants were unaware of plaintiff’s mark when they created the “straightforward, descriptive title.”

The court came close to blaming the plaintiff for its own trademark woes:

Any minimal confusion here is the “risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” (Citing KP Permanent Make–Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121–22 (2004))

That should serve as an instruction to all trademark adopters: While descriptive marks may do a good job of conveying information about a product, for the same reason the trademark owner may not enjoy as much protected exclusivity in the mark.

In a final pretrial order, plaintiff stated that “to this day [defendant] persists in using [plaintiff’s] copyrighted ‘usurpassed performance’ language on its packages.” Defendant filed a motion in limine (a motion to exclude evidence) to preclude plaintiff from introducing evidence or putting on testimony that would infer or suggest the phrase “unsurpassed performance” has been registered as a copyright.

The court granted the motion.

Under the Copyright Act, “[w]ords and short phrases such as names, titles, and slogans” are not subject to copyright. 37 C.F.R. § 202.1(a). The court looked to a number of cases in which short phrases had been denied copyright protection. For example, other courts had held that “Where Words Come Alive,” “Earth Protector,” “Chipper,” and “Retail Plus” were not copyrightable material.

One wonders whether plaintiff was really trying to assert some form of unfair competition or trademark infringement. The notion is worth entertaining for but a brief moment, till one realizes that laudatory phrases such as “unsurpassed performance” find no protection under trademark law either.

Not too surprisingly, Kanye West’s lawyers have demanded the developers of the Coinye West cryptocurrency not use his name. The somewhat obnoxious letter shows that Kanye’s lawyers are asserting, among other things, trademark infringement and right of publicity misappropriation.

Russell Brandom at the Verge observes that “[o]nce the code is public, the original coders will be unable to prevent its use, forcing West’s legal team to prosecute every instance of Coinye individually.”

That observation raises a couple of interesting points. The first one is more of a clarification — once the code is in the wild, we should assume Kanye would only care to stop the use of his name, and would not seek (nor have any basis upon which) to stop anyone from using the code.

Stopping users of a cryptocurrency from using the name of that cryptocurrency could be a bit tough. Kanye’s lawyer threatens to “purse all legal remedies against any business that accepts the purported COINYE WEST currency.”

Infringement and misappropriation both depend on a use of the offending term in a commercial way. But users of the decentralized system, and the vendors who accept that currency, are not providers of any goods or services onto which Kanye’s identity will be attached. If one is merely using the currency as a tool, it’s hard to see how that’s any different from implicating the rights of the historical figures who appear on paper currency. So might it all be about the Benjamins? Maybe not at all.

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Evan Brown is an attorney in Chicago helping clients identify and manage issues concerning technology development, copyright, trademarks, domain names, software licensing, service agreements and other matters involving the internet and new media.

Evan is a partner in the law firm of Much Shelist, P.C. He is an adjunct professor of law at Chicago-Kent College of Law, and is a Domain Name Panelist with the World Intellectual Property Organization (WIPO).